Web Ad Trademark Law To Be Retested

scubacuda writes "News.com et al report that The Ninth Circuit U.S. Court of Appeals on Wednesday found Playboy Enterprises can pursue charges that Excite and Netscape Communications violated its trademark by selling banner advertisements triggered by the terms 'playboy' and 'playmate.' The decision reverses a district court ruling that dismissed the suit without a trial in 2000. Playboy 'clearly holds the marks in question, and defendants used the marks in commerce without (its) permission,' a split three-judge panel wrote in its majority decision." This is a shame, because the first judge to look at this case seems to have pretty much gotten it right: "Although the trademark terms and the English language words are undisputedly identical, which, presumably, leads plaintiff to believe that the use of the English words is akin to use of the trademarks, the holder of a trademark may not remove a word from the English language merely by acquiring trademark rights in it."

Comments

IMHO, but I must admit IAAL

[GnrlFajita]

I would have to disagree that the previous court "got it right," implying that this one got it wrong. Playboy & playmate are famous trademarks, even though they have independent English-language meanings. If I do a search for "playmate," and a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement? If the ad is for, say, children's clothes or toys, I can see it; but anything else is blatantly taking advantage of the consumer's use of Playboy's trademark and that is what happened here.

Trademark law is based on likelihood of confusion. I don't agree, and the courts won't either, that Playboy can stop all uses of these terms. But I think it's justified here, where someone is using a company's trademark to sell related but non-affiliated goods. This isn't a case of the search results including related goods; here the website brings up a paid-for banner advertisement: "Some consumers, initially seeking Playboy's sites, may initially believe that unlabeled banner advertisements are links to Playboy's sites...Once they follow the instructions to 'click here,' and they access the site, they may well realize that they are not at a Playboy-sponsored site."

I agree that most intellectual property law is subject to abuse (see, e.g., RIAA), but that does not automatically equal the proposition that it is all bad or immoral.

Re:IMHO, but I must admit IAAL

[Planesdragon]

If I do a search for "playmate," and a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement?

If the non-Playboy site has a clearly differnet name, and there's no reasonable possibility of confusion?

For a different take--if a business named themsleves P-something, and took out a large ad in the "adult entertainment" directory that just happened to be on the same page as Playboy's--how would this be trademark infringement?

Re:IMHO, but I must admit IAAL

[Seehund]

As long as the advertisement doesn't claim to be from Playboy or advertising Playboy or providing a service/product named Playboy, what's the infringement?

What's next? Will this affect indexing?
Can a porn site no longer use the phrase "Playboy(TM)" (including the "TM") anywhere on their site, because it might get indexed and lead clueless/illiterate googlers there, when they were actually looking for the site of "Playboy(TM) Magazine"?

Re:IMHO, but I must admit IAAL

[FreshFunk510]

I agree with you accept I think you're a bit confused. The PREVIOUS (initial) court denied any case of trademark infringement while the LATTER court said there was trademark infringement.

Additionally, I disagree with the comments by the main poster. Even though the initial decision is being overturned, I don't think the 9th circuit is disagreeing with the statement: "English words is akin to use of the trademarks, the holder of a trademark may not remove a word from the English language merely by acquiring trademark rights in it."

I think what the 9th circuit is saying is that if you use english words that are obviously trademarks in order to mislead and confuse a consumer (especially into purchasing a different product) then that goes beyond the rights granted of just using English words. (i.e. You can yell "fire" at home, in your backyard, whatever. Freedom of speech. But if you yell "fire" in a movietheater then you're liable if anyone gets injured. It's circumstantial.)

I think the article sums up the point here: "In Playboy's case, it charged Excite with trademark infringement when it sold banner ads to adult-related sites keyed to the terms "playboy" and "playmate," arguing that it created consumer confusion and diluted its trademarked names."

Re:IMHO, but I must admit IAAL

[Sloppy]

If I do a search for "playmate," and a banner ad pops up for a non-Playboy adult-oriented site, how is that not trademark infringement?

Because the search engine is not obligated to show you a clear picture of reality, nor are they obligated to provide a service where the words you enter bring up what you're really looking for.

When you are looking at magazine covers and you see something titled "Playboy" that isn't the real thing, then the magazine itself has lied to you, misrepresenting itself. That's trademark infringement.

If you ask someone to get you a Playboy and he comes back with "Doctor Dobbs Swimsuit Issue" then your resulting anger is a matter between you and your him. DDJ didn't infringe a trademark, and more importantly, the guy who brought it to you, didn't infringe either. He just disappointed you (unless you like reading articles about how to use Java to see through women's clothing).

If you hired someone to bring you a Playboy and he brought you something else, then that might be fraud. But it still wouldn't be trademark infringement.

I think that using a search engine (especially a free one) is more like a stranger bringing you the wrong thing. The search engine owes its users nothing, so it's not fraud. And they're not saying, "Here's Playboy"; they're saying, "Here's something you might be interested in." That's a subjective judgement call.

I really hope Playboy loses this one. I don't want to open the door to search engines suddenly being under a bunch of restrictions and the obligation to always provide exactly the right thing. That will kill them. And just to put it in another light: when you search on "Scientology" do you want search engines to only be able to provide links to sites owned by that *cough* church? Aha, got you there.

Re:IMHO, but I must admit IAAL

[TopShelf]

This case isn't about the indexing of websites, but the use of specific keywords that were sold to the advertisers in question. They were using the value of those trademarks to drive traffic to their own sites, which could very well be found to be infringement.

It reminds me roadside markets I've seen set up with lots of knock-off athletic shoes, and a guy standing out front with a hand-written sign that reads in huge letters "NIKE", with small text underneath that says "-style shoes". Since they're set up and taken down in a couple days, nothing happens, but I'm sure Nike could win an infringement case against such tactics.

Re:IMHO, but I must admit IAAL

[Boing]

Agreed. This reminds me of the FreeCraft cease-and-desist letter from Blizzard scandal. A lot of people were saying "Oh, Blizzard's trademark can't apply to everything meeting the pattern 'n-craft'!"

But what they failed to notice is that Freecraft was using that word pattern, established through the marketing dollars of Blizzard, in the promotion of its own product which was a direct competitor to Blizzard's products.

The parent post is right, the spirit of trademark law is to prevent piggybacking on established product names by competitors. "Freecraft" was against that spirit. So is hijacking "Playboy" and "Playmate" to benefit Playboy's competitors. Whether these things are against the letter of the law is up to the courts to decide, but we shouldn't hide unethical behavior behind the letter of the law when we lambast Microsoft, RIAA, etc for doing the same thing.

Wait a minute...

[Stingr]

Microsoft can't sue people because windows is too general a term but Playboy can???

That seems a little hypocritical to me.

Re:Wait a minute...

[CountBrass]

You need to check a dictionary. The word you are looking for is "inconsistent".

Anyway I (and the courts) think the two cases are different. Windows is (and was) a general term within GUI applications long before Bill registered Windows(tm). In contrast, Playboy (and Playmate) were not associated with Porn' before Hugh Hefner did his job.

The first court patently got it wrong, the second one got it right. The system's working.

Playboy

[So Called Expert]

The word "playboy" (lower case "p") is an english word.

I guess I'd better start watching which words I use for fear of lawsuits. Come on up to my... ahem... apartment-or-suite-on-the-top-floor and we can discuss it.

It's pretty shocking what some firms will do.

[Anonymous Coward]

For example, I looked up "Jenners" in Google -- Jenners is a famous Edinburgh, UK department store -- I got a paid advert for Debenhams, a UK-wide department store who attract the same middle-class customers as Jenners.

Why the hell did Google let Debenhams brazenly advertise under their competitor's name?

Google AdWords

[Anonymous Crowhead]

Google has sent our company a number of emails saying they have disabled keywords we use in our Adwords campaign because they are trademarked. At first, the company with the trademark had to complain, but now it seems like the are actively searching for trademarked keywords and disabling them.

9th Circuit famous for bad decisions

[elhondo]

Check out this article over at Slate: slate.msn.com/id/2089879

With all due respect to /. bias

[fw3]

This is (imo) clearly not a cut and dried case of 'removing a word from the English language'. From what I can read Excite and Nestscape were using trademarked keywords to sell banner advertizing directly competitive to Playboy Inc. business interests and doing so using their TMs.

"Linux" is TM to Linus Torvalds. The poster who thinks these judges decision is a "shame". I wonder if "Linux" were being used to drive search engine clients to Microsoft, Open/Free/NetBSD or whomever, would the politically correct (/.) views be different?

And who's to say that the Judge who "got it right" the first time had a decent understanding of the issues, or didn't have an axe to grind vs the pornography industry. Possibly she can't see the TM on the pages the way it would appear if it were used in a print-advertisement, and ruled accordingly, while anyone understanding that 'content' now exists in code that's not visible.

So it's pretty clear to me that yes PEI has a pretty good case here, that Excite, Netscape and their clients were profiting on PEI's TM's and that the use was commercial (i.e. it's much less of a free-speech issue - *yes* the rules for commercial speech are different). The article wasn't all that clear but it seems that all of this came about because Google was pro-actively seeking a judgement on it's own approach to TM's in search/advertising. Again no surprise here that Google would follow the letter of the law while Excite & Netscape would use a sleaze approach to gain revenues.

Come on now...

[tbase]

Does anyone believe for a second that the people placing ad buys on the terms playboy and playmate are not specifically trying to target people looking for Playboy Playmates? When a trademark is the same as a common word, shouldn't the determination be made based on intent? Maybe some users searching for "playboy" might mean the english term, but that's not who the advertisers are targeting. They are making money off a trademarked name, and as far as I'm concerned, that's wrong.

I think it's obvious

[The I Shing]

When I first read about this case way back when, I thought, "Oh, geez, Playboy's being ridiculous," but then I thought about it some more and I have to agree that the websites in question were violating Playboy's trademark, in my non-lawyer, non-judge, never-went-to-law-school layman's opinion.

I mean, the words ford and mustang are in the dictionary, too, but wouldn't it violate Ford Motor Company's trademark if those words in a search triggered a banner ad for the Pontiac Grand Am? What about the words chevy and corvette, which are also in the dictionary? How many people think of the words ford, mustang, chevy,and corvette in relation to cars? I bet it's about as many people as would think of the word playboy in relation to a men's magazine.

I disagree with the post, and I think that the first judge in the case got it wrong, not right. I don't think he or she really understood just how the words were being used. The words playboy and playmate were being used to promote a competing product, which, AFAIK, is a violation of trademark law. But maybe another appeals court will feel differently.

Don't use the trademark...

[iconnor]

We should all comply with their wishes. Do not search, use the word, talk about, or buy anything that has that trademark. Also Google and other search engines should remove any references to their trademark and supress any search results, news and links containing their trademark.

Then see if they really want to keep suing over this.

It's the machines that make the difference here

[Dave21212]

The judges got it wrong. These people are not selling a magazine called "Our Playboy" or anything that directly infringes. They are using the term to target people interested in that term.... Remember, these words are not being displayed to humans per se, but to MACHINES that index web pages.

It's more like when a marketer uses a computer-generated list to target BMW owners in order to sell them expensive car products.

Perfectly legal !@!!!

Some unbelievable cases: why the system fails

[dexterpexter]

I believe that our entire patent, copyright, and trademark system has reached the point of ridiculous.

Consider these examples from Overlawyered.com:

Can you own common words? "In one of the broadest crackdowns ever issued against a domain name holder, a federal judge has ordered eReferee.com to stop using the word 'referee' in all of its domain names. ... In issuing the court ruling, Wisconsin federal [j]udge C.N. Clevert sided with Referee magazine, a periodical holding the trademark to the word 'referee' for the purposes of publication." David Post, an associate professor of law at Temple, called the ruling "unbelievable", saying that regardless of whether eReferee.com had violated trademark law, as was alleged, by using a logo confusingly similar to its rival's, "You just don't want to let someone own the word 'referee'". (Lisa M. Bowman, "Judge approves domain name penalty on eReferee", CNet, Feb. 16; Gretchen Schuldt, "Referee Enterprises Seeks to Halt Competitor from Using 'Referee' in Web Name", Milwaukee Journal Sentinel/Corporate Intelligence.com, Feb. 23).

Using his own name a legal risk. The Atlanta Journal-Constitution's Bill Wyman shares his name with a somewhat well-known musician who played bass with the Rolling Stones. He was nonetheless unprepared when he received a letter from the musician's lawyer suggesting that he might be violating the other guy's rights by ... well, by going on using his own name (Bill Wyman, "Will the real Bill Wyman please tune up?", Atlanta Journal-Constitution

"'Let's Roll' Trademark Battle Is On". Why'd she have to hire that lawyer? No sooner does the widow of Flight 93 hero Todd Beamer set up a foundation to honor his memory than its lawyer announces that he's having it apply for a trademark on the now-famous phrase "Let's Roll", so that anyone who wants to use the words on hats or t-shirts will have to fork over a royalty. Since September 11 numerous other individuals have also sought to copyright the phrase, although it was in common use before that date. (AP/Las Vegas Sun, Feb. 1)

Someone might get confused. "Just when you think the battle over domain names and trademarks can get no more ridiculous, Pillsbury goes and ups the ante. Universities and companies as large as Sun Microsystems received cease-and-desist letters this week ordering engineers to stop holding what the [giant flour maker] considers illegal 'bake-offs.' But it's not as if the engineers are huddling together around the oven trading stolen recipes -- in techie lingo, a 'bake-off' is a get-together in which software programmers test their creations against network protocols to see if they will work correctly. ... No matter: The geeks are infringing on Pillsbury's 'bake-off trademark,' the letters argued." (Damien Cave, "Pillsbury Doughboy mauls techies", Salon, Jan. 20)(Slashdot thread)


It is becoming ever more apparent that the entire system needs to be evaluated and rewritten. But, as easy as this is to blame on an outdated system, this case (the parent post) shows that even when a policy is in place, it will be abused and ignored. Perhaps before Trademarking anything, they should read their own Trademark policy or, in the case that they don't recognize playmate as an English word, perhaps they should spend a little time reviewing the dictionary.

What next, Microsoft finally succeeding in Trademarking "Windows"??? Playboy goes after the children's toy industry because they unashamedly use the term "playmate" in many of its toys?

It makes no matter that these advertisers were using the popularity of these words to boost their services. Capitalizing on things is not a crime. Especially when the terms they are capitalizing on are not trademarkable. If anyone

R "playboy" searchers looking for playboy.com ?

[leoaugust]

"Some consumers, initially seeking Playboy's sites, may initially believe that unlabeled banner advertisements are links to Playboy's sites...Once they follow the instructions to 'click here,' and they access the site, they may well realize that they are not at a Playboy-sponsored site."

"Some consumers" - What percentage of people doing search for "playboy" or "playmate" are really looking for www.playboy.com ?

When I do searches, sometimes I use some word as a "seed." The intention is not to see sites with that keyword precisely, but to see under what category of Google they fall under, or to see what are the other related sites to my keyword. This then allows me to do a more thorough search of the various possibilities.

For example, if I had to do research on inexpensive or free email I would do a search for "Yahoo email" because I know Yahoo provides free emails. The Google category that it falls under is Computers/Internet/E-mail/Free/Web-Based/Y/Yahoo/ Once I get the directory path, I can trim it to get Computers/Internet/E-mail/Free/

Now the list that I see Computers/Internet/E-mail/Free/ is what I was looking for. I can now select "free email" providers that might provide more space than Yahoo, or better pop3 or imap facilities, or more features like throw-away emails.

My point is that even though I started off with "Yahoo" in my search, I was not looking for Yahoo per se.

So, when I type in "playboy" or "playmate" or "Playboy" or "Playmate" in the search box, I think it is presumptuous of Playboy.com and the Hefners to think I was looking for their site.

And this is why I think they have made a very weak assertion. Look at the wording of their assertion - It is littered with initially ...

"Some consumers,initially seeking Playboy's sites, may initially believe that ....

because the attorney's understand how weak their assertion really is.

I think Playboy.com should be nailed on why they think everyone typing in playboy or playmate is looking for their site. And then, they must be made to prove that they are loosing revenue that might have come to them. Otherwise they are no different from RIAA which makes the assumption that every song that is freely downloaded would have been purchased by the downloader, and hence RIAA adds up the dollar values of the downloaded songs to come up with their "piracy related losses." BS. If I couldn't have downloaded the song for free, I wouldn't have even looked for it - let alone pay for the damn thing. To me, the situation for "playboy" and "playmate" searches is very similar.

Re:Not quite

[stevew]

I'll just point out that this decision was from the 9th Circuit, i.e. The "Silly" Circuit. This group of judges gets overturned at a rate of 92% for those cases accepted for appeal.

In the quick research I just did - they are over turned about 30% more than any other circuit in the US. Heck - they even overturn themselves. First the CA recall is off, then its on...

Life is always entertaining out here on the Left Coast!

Re:Not quite

[Ryosen]

You must be thinking of Henry Fjord.